WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Swarovski Aktiengesellschaft v. Whois Privacy Protection Service by MuuMuuDomain / takeo nagase
Case No. D2013-0802
1. The Parties
The Complainant is Swarovski Aktiengesellschaft of Triesen, Liechtenstein, represented by LegalBase (Pvt) Limited, Sri Lanka.
The Respondent is Whois Privacy Protection Service by MuuMuuDomain of Fukuoka-shi, Japan /takeo nagase of Osaka-shi, Japan.
2. The Domain Name and Registrar
The disputed domain name <swarovski-decoshop.com> (the “Domain Name”) is registered with GMO Internet, Inc. d/b/a Discount-Domain.com and Onamae.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 6, 2013. On May 6, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 7, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 10, 2013 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on May 13, 2013. On May 10, 2013, the Center transmitted an email to the parties in both Japanese and English language regarding the language of the proceeding. On May 10, 2013, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.
The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 17, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was June 6, 2013. The Response was filed with the Center on June 4, 2013.
On June 7, 2013, the Complainant requested suspension of the proceedings. The Center notified the Parties of the suspension on the same day. Further requests for extension of the suspension were received from the Complainant on July 7, 2013 and July 15, 2013. On August 15, 2013, the Complainant requested reinstitution of these proceedings. The Center notified the Parties that these proceedings were reinstituted on August 16, 2013.
The Center appointed Gabriela Paiva Hantke as the sole panelist in this matter on September 2, 2013. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
Swarovski Aktiengesellschaft, the Complainant, has registered the SWAROVSKI mark globally and in several classes including 14, 18, 25 as shown in Annex B to the Complaint. Japan is one of the countries where the Complainant owns registrations for the trademark SWAROVSKI, under registration number 89205, copies of which are attached in Annex C to the Complaint.
The Complainant has registered several domain names, including <swarovski.com> and <swarovski.net>, which point to the Complainant’s official website, located at “www.swarovski.com” (The “Swarovski Website”).
The Complainant uses the trademark SWAROVSKI in connection with several goods such as crystal jewelry, stones, and home accessories, collectible items, and in the lighting industries.
The Complainant is the world’s leading producer of cut crystal, genuine gemstones and created stones with production facilities in 18 countries, distribution to 42 countries and a presence in more than 120 countries. In 2011, the Complainant’s products were sold in 1, 218 of its own boutiques and through 1, 000 partner-operated boutiques worldwide.
The Domain Name was registered on July 15, 2011.
5. Parties’ Contentions
The Complainant is requesting the Domain Name to be transferred to it in view of its rights in the trademark SWAROVSKI, a well-known trademark in the area of crystal jewelry and related goods including home accessories.
The Complainant is the owner of the trademark and owns registrations around the world as shown in Annex B and C to the Complaint. The Complainant has provided evidence of its trademark rights, including evidence that the trademark SWAROVSKI is registered in Japan, a country where the Complainant has spent substantial time, effort and money advertising and promoting the SWAROVSKI marks. As a result, the SWAROVSKI marks have become famous and well-known in Japan and there have been several activities in Japan involving the Complainant and its SWAROVSKI trademark, including (a) House of Hello Kitty Tokyo, Presented by Swarovski (Annex D to the Complaint), and internationally the public has come to associate the SWAROVSKI mark exclusively with high quality items marketed by the Complainant.
The Complainant further contends that the Respondent does not have any rights or legitimate interests in the Domain Name, and that the Domain Name was registered and is being used in bad faith.
The Respondent alleges in its Response that it did not use the Domain Name in bad faith and that all products sold at the website connected to the Domain Name are authentic.
6. Discussion and Findings
A. Language of the Proceedings
Paragraph 11(a) of the Rules provides that:
“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
As the language of the registration agreement is Japanese, Japanese typically would have been the language of the proceedings. The Complainant asserts that English should be the language of the proceedings as some language on the website at the Domain Name is in English. Further, the Panel notes that the Respondent utilized the English language in the cover email to its Response.
Paragraph 11(a) of the Rules provides the Panel the authority to determine the language of the proceedings, having regard to the circumstances of the administrative proceeding. As the Respondent appears to have the ability to converse in and understand the English language, and as it would present a burden on the Complainant and introduce undue delay to the proceedings to find otherwise, the Panel determines that English shall be the language of these proceedings.
B. Identical or Confusingly Similar
The Domain Name is confusingly similar to the SWAROVSKI mark. The Domain Name <swarovski-decoshop.com> includes the trademark SWAROVSKI plus the word “decoshop” which does not sufficiently distinguish the Domain Name from the trademark in the opinion of the Panel and to the contrary, it results in a confusingly similar Domain Name in view of the meaning of the word “deco” and “shop”.
Under these circumstances, it is evident to the Panel that the Domain Name is confusingly similar to the Complainant’s trademark SWAROVSKI because the added word “decoshop” refers to a shop and to the expression decoration, which creates the impression of a web site of the Complainant. This means that Internet users and consumers will likely be confused and will identify the Domain Name as one that is owned by or related to the Complainant and its trademark SWAROVSKI.
In summary, the Panel finds that the Domain Name <swaroski-decoshop-com > is confusingly similar to the mark owned by the Complainant, so the Complainant has therefore satisfied the first element of the Policy.
C. Rights or Legitimate Interests
The Complainant has shown ownership of the SWAROVSKI trademark globally and also in Japan and has also proven that its business is to produce and sell jewelry and other goods including home decoration items.
In the Panel’s view, the Respondent did not show any rights or legitimate interests in the Domain Name and from the evidence filed by the Complainant as to the use that the Respondent is making of the web site under the Domain Name, namely to sell the same goods for which the Complainant uses its trademark SWAROVSKI, without any license or authorization from the Complainant. The Respondent’s unsupported and self-serving statements do not, in the Panel’s view, overcome the Complainant’s prima facie case. It is obvious on the basis of the evidence in this case that the Respondent does not have any right or legitimate interest in the Domain Name.
In view of the above, the Panel finds that the Complainant has therefore satisfied the second element of the Policy.
D. Registered and Used in Bad Faith
The Respondent has registered the Domain Name in bad faith because SWAROVSKI is a well-known mark and the registration of the Domain Name reveals a knowledge and awareness of the existence of the famous SWAROVSKI trademark and it is not possible, in the Panel’s view, to be a coincidence, because the Domain Name does not only contain the Complainant’s trademark but also words related to the Complainant’s activities namely “deco” and “shop” to intentionally pass off the web site as the Complainant and its famous products on the Internet.
The Domain Name is also being used in bad faith because the website at the Domain Name offers for sale a variety of SWAROVSKI products such as “jewelry”, “bag hanger”, “reel key” and more. The Respondent would not have advertised products purporting to be Swaroski if it was unaware of the Complainant’s reputation. The Respondent has done nothing to identify itself as being independent from the Complainant and the Respondent has done more for the web site at the Domain Name to resemble that of the Complainant and its well-known trademark. In the Panel’s view, the Respondent is intentionally attempting to attract consumers for commercial gain by purporting to sell the Complainant’s products.
Under these circumstances the Panel concludes that the Respondent has registered and is using the Domain Name in bad faith, by using the Domain Name to attract Internet users and consumers to its web site by creating a likelihood of confusion with the Complainant’s mark.
The Panel finds therefore that the Complainant satisfied the third element of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <swarovski-decoshop.com> be transferred to the Complainant.
Gabriela Paiva Hantke
Date: September 16, 2013